Abstract

Recent decisions of the European Court of Justice (Astrazeneca) and Italian Antitrust Authority (Pfizer) suggest that even the mere acquisition – as distinguished from the exercise – of a patent (as any other IPR) may amount to a misuse if the achievement thereof runs in contrast with the rules governing its entitlement; and, if the patent owner enjoys a dominant position, such patent misuse may translate into an abuse of said position under art. 102 TFEU.

Cases of this type must be clearly distinguished from those where the patent has been legitimately/regularly obtained, and its holder exercises the ‘institutionally excluding’ related power against unauthorized third parties. In such cases, antitrust law comes in not to enforce a properly ‘abusive’ conduct, but to correct an objective market situation which has grown ‘excessively’ foreclosing competition – and this, thanks to the very success of the patent. A situation, and a legal solution, which bears a strong analogy of rationale with the one envisaged by art. 2597 of Italian civil code.

Thus, that of ‘abuse’ is a general normative tool that is used both to adjudicate anti-competitive torts (as in the first case) and to regulate an objective ‘close to monopoly’ situation occurred without any wrongdoing by the patent holder.

The distinction is confirmed by the consequences. On one side, as in Astrazeneca and Pfizer, the patent holders are sanctioned (and their patent or CCP is subject to annulment); no compensation whatever of the patentee is thinkable.

On the other side, in the case of the regular acquisition and intrinsically legitimate exercise of the IPR competition law imposes a duty to license it on FRAND terms: i.e., with compensation of the patent holder, fully retains his entitlement. Here, self-evidently, the patent holder has behaved lawfully -otherwise a compensation would be unthinkable! The ‘abuse’ may properly occur ex post, i.e. only if the holder refuses to fairly deal with the willing licensees - refuses, in other words, to comply with a regulatory measure.